Final Rule: Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications

Continuation Limitation: “The Office is revising the rules of practice to require that any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted.”

Claim Limitation: “The Office is also revising the rules of practice to provide that an applicant must provide an examination support document that covers all of the claims in an application if the application contains more than five independent claims or more than twenty-five total claims.”

Patent Application Limitations: “The Office is also revising the rules of practice with respect to multiple applications that have the same claimed filing or priority date, substantial overlapping disclosure, a common inventor, and common ownership.”

Analysis to come: …

New Rules:

125 thoughts on “Final Rule: Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications

  1. 125

    I do not find any talk of an examination support document in either the Senate or House Bill restricting Independent and dependent claims to 5/25. Was this just a proposal?? or am I missing the language? thanks

  2. 124

    … You’re also missing the USPTO’s Frequently Asked Questions page ( link to uspto.gov )

    Here’s an exerpt regarding the applicability of 1.78(d)(1) — which discusses the petition and showing:

    K2. Do the changes to 37 CFR 1.78 affect the applications filed before November 1, 2007?

    The changes to 37 CFR 1.78 (except for 37 CFR 1.78(a) and 1.78(d)(1)) are applicable to any nonprovisional application pending on or after November 1, 2007.

    The changes to 37 CFR 1.78(a) and 1.78(d)(1) are applicable to any application filed on or after November 1, 2007, or any application entering the national stage after compliance with 35 U.S.C. 371 on or after November 1, 2007.

  3. 123

    “What am I missing?”

    Until the new rules take effect in November, there is no basis for limiting the number of continuation applications which may be filed.

  4. 122

    “What am I missing? Thanks!”

    You’re missing RTFR’s comment: link to patentlyo.com

    The “one more” rule applies to the exemption from having to file a petition & a showing. However, no petition or showing is required for any application filed prior to November 1, 2007.

  5. 121

    RTFR and SF (or anyone else!) – What is the precise basis for your contention that one could file more than 2 continuations on a family before November 1? You state that one could get away with such filings, giving up only the “one more” continuation (while still worrying about the 5/25 rules, of course), but I read the rules as saying that if you file “one more” after 8/21, then you’re done if the family has 2 or more continuations already. What am I missing? Thanks!

  6. 120

    I haven’t seen anybody comment specifically on this (although lgb somewhat touched on it), so I hope it is not duplicative – for all of those looking at filing, or in anticipation of this rule being published, did file, numerous continuations, §1.75(b)(4) could cause some problems if the Exminer decides that the claims are “patentably indistinct” from each other. If I am reading this correctly, they can limit the ACCUMULATED TOTAL of all the claims from the related applications to the 5/25 limit, and this applies to all cases which have not received an Office Action prior to the Nov. 1 cut-off. So, even if you filed 3 continuations off of a single case three weeks ago, the PTO has still managed a way into potentially causing you issues.

    Ouch.

  7. 119

    “So if I have a long chain of continuations prior to Aug. 21, I can file several continuations in parallel prior to Nov. 1, but no more after Nov. 1, since I more than used up my ‘one more con’ after Aug. 21.”

    Yep. If your client cares about keeping a continuation alive as long as possible to address competitors’ design arounds, the “one more” has some appeal because the “one more” application may not be filed for years depending upon when the last in the chain was filed and the current backlog in its art unit. But, if your client cares about claim coverage, multiple continuations with patentably distinct claims filed before November 1, 2007 may be a better route — but be prepared to rebut the presumption that the claims are patentably indistinct.

  8. 118

    RTFR – thank you for the clarification – I guess I really need to read the comments to the rules much more carefully. This one was confusing – I had to read the FR section you referenced plus your comments for it to sink in. So if I have a long chain of continuations prior to Aug. 21, I can file several continuations in parallel prior to Nov. 1, but no more after Nov. 1, since I more than used up my “one more con” after Aug. 21. Your caution about the 5/25 rule is certainly correct, as well.

  9. 117

    lgb:

    The slides 32-33, which refer to August 21st and discuss the “one more” application, are misleading.

    Turn to page 46736 of the Final Rules and look for the discussion about “August 21, 2007” in the last paragraph on the page. There you will find a discussion of how the USPTO will give a special exemption from having to file a petition and showing for “one more” application — even if its priority chain is huge — so long as the application is the only one filed after August 21, 2007 that claims priority to the applications in that priority chain. This means that, even if the application is filed well after November 1, 2007, no petition and showing will be necessary.

    BUT REMEMBER: *no* petition and showing will be necessary for *any* application filed *before* November 1, 2007. That means that you can file unlimited continuations between now and then without having to file a petition and showing.

    Slides 32-33, however, don’t tell you this and slide 33 even seems to suggest that all second applications filed after August 21, 2007 require a petition and showing. That’s not true. The petition and showing is not necessary for any application file before November 1, 2007. Plain and simple.

    So file all you want before November 1, 2007, you’ll get the priority claim. ***BUT*** you may have to file an ESD for all those continuations if, for example, the claims are not patentability distinct. (All those continuations will not receive a first office action on the merits prior to November 1, 2007 and thus will be subject to the 5/25 rule.) ***ALSO***, you won’t get the benefit of the “one more” exemption for a continuation filed after November 1, 2007. (But what do you care if all of these continuations cover what you want?)

  10. 116

    I’ve seen some comments here that the rules allow you to file as many continuations as you want prior to Nov. 1, after which you are limited to one more. However, the slides from the webinar and the comments precding the rules published in the FR state that for applications filed prior to Aug. 21, you can only file one more application after Aug. 21 – 2 more, I suppose, if you haven’t filed any continuations. The rules appear to be truly retroactive to prevent what some here are saying we can do – filing multiple continuations prior to Nov. 1. Now, it does appear you can file an RCE before Nov. 1 regardless of how many you’ve filed in the past, but after Nov. 1, your ability to file an RCE will be dependent upon what you have filed pre Nov. 1. But if you filed a continuation or CIP already prior to Aug. 21, you only have one more. If you filed 10 con’s or cips prior to Aug. 21, you have one more – regardless whether you decide to file it Aug. 22 or Dec. 5.

  11. 115

    The PTO’s headline for their webcase announcing the new rules shouldn’t have been “Clarity Moves Innovation” as evidenced by how confusing and limiting some of the new rules are.

    A better title would have been “US Economy Takes a $1B Hit as USPTO Shirks Responsibility for Patent Examination onto Inventors.”

    Note in the FR the PTO estimated the burden of these new regulations to be 3,724,791 hours. Figure maybe $260/hour for average IP rates… it’s a billion dollar hit!

  12. 114

    “I wonder whether you can use that “one more” to provoke multiple restriction requirements and spawn several divisionals, each of which being entitled to two continuations.”

    The best strategy for provoking a restriction requirement may to be file each application with five different inventions (described in five independent claims) going in completely different directions, being absolutely certain to keep your claims at or below the 5/25 claim limit. Then the examiner will have no reason not to restrict. (Of course, this strategy will not always be possible.)

    Possible Practice Point: Once you pass 5/25 hoping for restriction, I believe you are completely at the examiner’s mercy(he has zero incentive to restrict if you will be forced to submit the ESD), and the mercy of the ESD requirements and the 2-month non-extendable time limit. If you need to be higher than 5/25, append claims 6-N and 26-NN to the detailed description (before I/We claim or What is claimed is:). That way, while you may trigger an objection, it can mitigate furher prosecution and claim incorporation issues/problems down the road caused by the 5/25 limit.

  13. 113

    “My understanding: you can file as many continuations as you want on a new application filed before November 1, *provided* you file the continuations before November 1. After November 1, the number of continuations you can file will be limited (or perhaps eliminated) by the rules (and by what you’ve already done).”

    That’s correct, but filing tons of continuations may still run afoul of the 5/25 issues.

    The benefit of *not* filing any continuations between now and Nov. 1st is that the rules give you “one more” that will not be subject to the continuation-number rules. (For more information, search on the phrase “publication date” in the published rules.)

    I wonder whether you can use that “one more” to provoke multiple restriction requirements and spawn several divisionals, each of which being entitled to two continuations.

  14. 112

    My understanding: you can file as many continuations as you want on a new application filed before November 1, *provided* you file the continuations before November 1. After November 1, the number of continuations you can file will be limited (or perhaps eliminated) by the rules (and by what you’ve already done).

  15. 111

    Does filing a new application before November 1 allow you to avoid the limitation on the number of continuations?

    Comments please.

  16. 110

    “Seems to me that you want to add claims to a single application, send in the SSR, and hope for a restriction. This way you get DIVs + 2 CONS.”

    And hope is right, I believe, if you have more than 25 claims total in the application! **Why wouldn’t the shrewd (or contentious) examiner always decide not to restrict any application with more than 25 claims?** Then you will have 2 months to get in your ESD on all five inventions (i.e. you’re doing all the search and claim analyzing work for him) or the application goes abandoned (two counts). It’s a win-win situation for him after the non-restriction: either an easy count or two (with you doing the search/claim work or getting a two-month letter), or you’ll need to abandon and re-file a continuation with less than 25 claims.

    And what about the office policy that a restriction is *always* proper? Couldn’t they squeeze an ESD out of you and then one action later restrict??

    Any thoughts?

  17. 109

    How about this:

    Pre 8/21, you have 5 applications that each already goes back to the same three or four cases one of which had an RCE.

    1. We are done with RCEs in these five cases.
    2. On 11/01 we will be done with continuations.
    3. Today, I can file as many continuations as I want.

    Am I missing something?

  18. 108

    Lets say I have a pre-8/21 case that discloses 5 “extra” inventions beyond what is currently claimed. If I file 5 CONs between now and 11/1, then post 11/1 I don’t think ANY CONS are allowed because of 1.78(d)(i)(B).

    Seems to me that you want to add claims to a single application, send in the SSR, and hope for a restriction. This way you get DIVs + 2 CONS.

  19. 107

    telco said: “Jay,

    “I took your challenge and sorry but I think see the flaw in this strategy you posted:
    ‘It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.'”

    For accuracy’s sake, it was Davey Jones’ challenge, not mine.

    telco said: “See C4 pg 10 of the USPTO’s FAQ. The USPTO considers “so-called “voluntary” divisional applications” as continuation applications. The FAQ makes clear “voluntary divisionals” before November 1 will be considered by the USPTO as continuation applications.

    “I searched 35 USC and 37 CFR, but could not find a provision for “voluntary divisionals.” The USPTO FAQ implies that “voluntary divisional” was an informal term for what was formally a continuation application.”

    I agree.

    I think another way to phrase the element of the rules Davey Jones was asking about is: for pre-8/21 families, you get at least one more continuation w/o a petition regardless of how many other continuations you filed pre-8/21; beyond that one ‘freebie,’ you’re can take the next two months to file as many continuations as you can, but come 11/1 you’ll need to petition for each one.

  20. 106

    “I have reviewed yet another request for information pursuant to 37 CFR section 1.105.”

    I know it’s off topic. But I have recently had a spike in these in my practice as well (as in, 2 in the past week and NONE in the 20 years before that)

  21. 105

    Jay,

    I took your challenge and sorry but I think see the flaw in this strategy you posted:
    “It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.”

    See C4 pg 10 of the USPTO’s FAQ. The USPTO considers “so-called “voluntary” divisional applications” as continuation applications. The FAQ makes clear “voluntary divisionals” before November 1 will be considered by the USPTO as continuation applications.

    I searched 35 USC and 37 CFR, but could not find a provision for “voluntary divisionals.” The USPTO FAQ implies that “voluntary divisional” was an informal term for what was formally a continuation application.

  22. 103

    Jay – The more I look at it, the more I think your interpretation is right, because 37 CFR 1.78(d)(1) applies only to applications filed on or after 11-01-2007; the “one more” rule looks to be a post-November 1 exception to the general limitation on the number of continuations.

    FirstGlance – I agree about the presentation (esp. slides 30 & 32) – it does make it look as if the date is 08-21-2007. I think the presentation is just incomplete.

    I still wonder if going with voluntary DIVs, to the extent one can, would be a better way to go given the additional flexibility within DIV families for other RCEs/CONs…

    Thanks.

  23. 102

    This is a message to our friends in the USPTO. I have reviewed yet another request for information pursuant to 37 CFR section 1.105. Careful, careful, you are making the ex parte process look like an inter partes process. I strongly recommend that you consult with your legal department, because when interrogatories are submitted you have to make sure that you define your terms; otherwise, you will be provided with the following phrase:

    I have insufficient information with respect to for a belief, becauase the interrogatory is vague due to the myriad of definitions that may be given to term X.

  24. 101

    Jay,

    This was my interpretation as well, but I am starting to waver with these “one more” rules. If you look at the PTO’s FAQ (link to uspto.gov) under section K4, it seems to suggest that families that have more than one continuation filed before August 21st will only get “one more” continuation (i.e. after Aug 21st). Although, I’m still clinging to hope that this is not the case. I guess we’ll find out more after our webcast tomorrow…

    Dennis, is there any way you could break these comments up into rule sections. For example, this entry would fit nicely under a “Continuations” section. Other sections might include “Constitutionality Questions”, “RCE’s”, “Divisionals”, “ESDs”, “5/25 Rule”, and “General Rants”.

  25. 100

    “it appears that the PTO is limiting the number of CONs that can be filed after 08-21-2007 to one, if the family in which the CON is filed already has 2+ CONs. However, I’m not seeing – yet a similar limitation on the number of voluntary divisionals. It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.

    If anyone can poke holes in this strategy, I’d appreciate hearing about it. Thanks in advance.”

    I was wondering about those time windows as well and reached a slightly different interpretation than you have. I don’t think the first part of what you said is correct. That is, I don’t believe the PTO is limiting the number of continuations you can file after 8/21:
    “The changes to CFR 1.78(a) and 1.78(d)(1) … are applicable only to any application, including any continuation application, filed … on or after November 1, 2007.” p. 46716, col 3.
    As I understand it, there’s nothing to prevent you from filing as many continuations as you want for the next two months, not just divisionals.

    I read the the first full paragraph on pg 46717 to mean that, if you have a parent application with a pre-8/21/07 filing date with umpteen continuations, also with pre-8/21/07 filing dates, you can, post 11/1/07, file a single additional continuation without a petition, as long as (1) you’re only claiming priority to pre-8/21/07 nonprovisional applications and (2) you didn’t file any continuations between 8/21 and 11/1 (i.e. you didn’t employ a strategy such as the one you suggest in your post).

    That’s just based on my preliminary and incomplete reading of the Fed Reg. If anyone disagrees, I’d like to hear it.

  26. 98

    > How do you explain to your investors that the business plan you have been talking about is no longer feasible, and that the money they paid so far is was flushed into the public domain by the PTO with the stroke of a pen?

    Your business plan is to keep on filing continuations until someone else finds an invention in your voluminous disclosure, and they claim it?

  27. 97

    Ahem – a real question about the new rules, if I can wade through the “Mooneys” out there – so it appears that the PTO is limiting the number of CONs that can be filed after 08-21-2007 to one, if the family in which the CON is filed already has 2+ CONs. However, I’m not seeing – yet a similar limitation on the number of voluntary divisionals. It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.

    If anyone can poke holes in this strategy, I’d appreciate hearing about it. Thanks in advance.

    PS – Malcolm – for your business, why did you decide on trade secret protection? (This is a real question, not snark – just curious.)

  28. 96

    ahh mooney or is it *money*? an obvious candidate for contraction

    i would really be hurt if you made negative comments about my musings… please please leave me alone

    rotlol

  29. 95

    how will the rules mesh with change in appeals practice as being proposed — 25 page limit? looks more and more like a market-based (read big company) registration system with no accountability and litigation on several levels at the heart of dispute resolution…

    in a parallel patent sstem far far away … georgia? north carolina? florida? maine?

    it would be easier to let *giggle* index all material– in fact, use the bounty model with ad-supported references for secific claim element terms with higher value under any number of IP valuation matrix (eg, anyone for the term “non-interfering” in art unit XX) — the level of granularity will likely follow the leadership of each art unit and the corresponding prosecutors from the applicant side; connect any other sources by 3rd party search affiliates to the same index; have the pto groups determine “broadest reasonable meanings” with visual mappings of these terms commensurate with the group art in which the case was filedm — use file histories to clean up the terminology index and prevent *wakipedia* problems and gaming the system; write patent applications which are directed specifically to the methods and apparatii that include the terms but spend more time on claim construction and context to meet 112 para1 while demonstrating 102/103 patentability– and bring in an outside contractor to administer the process so that the government can make more money from fees err taxes…

    although it is clear somethin is a bad patent, it doesn’t make much economic sense. a bad patent is only bad if the cost exceeds the return.

    the pto is one of the only if not the only government agency that makes money! not even treasury can claim that… so these changes have to reflect some other issue that is missing from the minutae of the 129 pages of explanation and clearly make for pre-emptive efforts at letting the rules come into effect…

    hmm… conspiracy theory … fodder for summer musings

    most contentious and public infrinegment case in the past 10 years was arguably? who was involved in that case? industry perceived to benefit most from these rule changes based on public comments? how many times did points raised by the porposed rule changes get raised by the case above? what executive branch officials have been overseeing the rule changes? if lawyers, from which firm?

    it is crazy to contemplate that while these changes are being made copyright term extensions and doj directives on pursuing copyright infrinegers is higher priority…

  30. 93

    JS wrote:
    “Another practice tip– This is rarely used in my experience, but priority can be dropped from applications. This might become commonplace now. If you have a CIP and you don’t need the priority date, you can amend the first paragraph to drop the priority claim(s).”
    If you did that, assuming the prior app has been published, wouldn’t it then be prior art against the CIP?”

    I think this might get rid of the few remaining reasons for filing
    a CIP at all, and there weren’t many, because in many cases the parent
    is available anyway as art against the CIP–please see an article
    by Kirk Teska entitled “The False
    Security of Continuation-in-Part Applications” in the March 2001
    issue of the Journal of the Patent and Trademark Office Society
    (ha ha ha, I know, but see the article anyway–it makes some
    excellent and completely independently verifiable points about
    CIPs).

  31. 92

    “Please do enlighten us then. How do you explain to your investors”

    I don’t have investors. I have customers.

    “the business plan you have been talking about is no longer feasible”

    Any attorney who helped formulate a business plan in the last 5-10 years whose success hinged on patent law stasis or broadening of patent rights had his/her head wedged deeply up into a dark place.

    “the money they paid so far is was flushed into the public domain by the PTO with the stroke of a pen”

    Get a grip.

  32. 91

    I figure this is worse for Examiners than applicants.

    Now Examiners will be cringing when they send out that Final Rejection that now will result in an Appeal Brief but that previously resulted in a quick and nifty RCE.

    Hah!

  33. 90

    Malcolm,

    The depth of your relevant experience is impressive. Please do enlighten us then. How do you explain to your investors that the business plan you have been talking about is no longer feasible, and that the money they paid so far is was flushed into the public domain by the PTO with the stroke of a pen?

  34. 89

    “Another practice tip– This is rarely used in my experience, but priority can be dropped from applications. This might become commonplace now. If you have a CIP and you don’t need the priority date, you can amend the first paragraph to drop the priority claim(s).”
    If you did that, assuming the prior app has been published, wouldn’t it then be prior art against the CIP?

  35. 88

    “Malcolm Mooney and Gideon, I read between the lines that you were never employed by an innovative start-up company.”

    Folks, after many failed attempts, we have a winner. John Edward the TV Psychic better watch his back. It is true: like nearly every patent attorney, I was never employed by an “innovative” start-up company.

    I do run a couple businesses of my own on the side, though, and my methods are kept as trade secrets.

  36. 87

    Mr. T said:
    “I’d much rather see a push to require a Document of Doom (i.e., ESD) in all cases, that all examiners be fired so we can hire them to do our ESD searches, and the PTO filing fees slashed accordingly. How’s that PTO? We no longer need your asses.”

    I agree. Get rid of all the Examiners. The PTO will become a clearing house. All of the examiners will go into private practice and charge $250/hour.

    Then we’ll see how much big business enjoys what it has wrought.

  37. 86

    “Unlike most of the comments in this thread, at least reading the new rules doesn’t bring back unpleasant memories of teenagers whining about, god-forbid, having to put some effort into learning something new”

    Jay, I am amused by your appetite for the crap the PTO is feeding us.

  38. 85

    Somebody please post if they know of any party that is going to challenge the rules and request a preliminary injunction before they take effect on Nov. 1? Although is seems unlikely it could happen that quickly.

  39. 83

    The point I am making is that the major reason the PTO exists is to search an invention. Once they abdicate that responsibility, what use are they?

  40. 82

    I’d much rather see a push to require a Document of Doom (i.e., ESD) in all cases, that all examiners be fired so we can hire them to do our ESD searches, and the PTO filing fees slashed accordingly. How’s that PTO? We no longer need your asses.

  41. 81

    “The takings issue is one of depriving one of the benefit of their property by legislative actions. This results from the retroactivity of the change in laws. Therefore, the government can do this . . . they just have to pay for it.”

    I don’t think there is a 5th amendment takings here. I believe a 5th amendment takings would require the applicants to be deprived of all economic viability in their patent applications. Since they can submit as many claims as they want for all currently pending applications (as long as they provide the claim analysis document) there is no such deprivation. You may want to try another theory.

  42. 80

    Anon said:
    at a minimum the new rules reduce the burden on the PTO. Reducing regulatory burden is a perfectly good and sufficient reason.

    Response:
    Really, why is that?. In fact, the USSC has stated numerous times that savings of money never justifies abrogating Constitutional duties. This is an interesting intersection of competing interests. Is it possible for a governmental agency to abrogate its Consitutional duties in furtherance of reducing its burden in order to save money. Maybe our Marines should use that reasoning in Fallujah. I can see it now, . . . Mr. President, the budgetary constraints that we are presently under makes it more cost effective to surrender than to fight. As a result the 2nd MarDiv was handed over to the enemy at 0800 hours this morning.

    Anon said:
    Otherwise, the PTO should do *unlimited* work to make sure it never issues an incorrect rejection.

    Response:
    No, the PTO should be held monetarily liable for damages caused to a defendant for an invalid patent. Again this is simply accountability-something which this government is short on.

    Anon said:
    I am not saying that the ex-post nature of the change is completely fair or desirable; nor am I saying that the limits are necessarily a good idea; nor am I saying that the PTO isn’t money grubbing while doing no work. But please, please leave the constitution out of this.

    Response:
    Why, there are literally volumes of law review articles on the unconstitutionality of executive agencies. It is time we trifurcate the same and this act by Dudas is the most glaring example in over 228 years of the Republic as to why the Separation of Powers is a good thing. Besides, if we control this executive agency . . . just think what can be done with the IRS :)

  43. 79

    Anon said:
    OK, I understand that the retroactive change in rules is somewhat unfair, and I sympathize to some small extent, but can we stop invoking the Constitution in all of this? Anyone who thinks they have a winning constitutional challenge, at least one that will win in a U.S. federal court, is delusional.

    Response
    I disagree. Were there clearly no Constitutional infirmities present then the USPTO would not have wasted three pages of Constitutional defense of their rules. In fact your matter-of-fact position on this matter leads me to believe that you are acting as an agent of the USPTO. I suspect that one of the big pharmacy companies is going to test the Constitutionality of these rules by the filing of a TRO within two or three weeks.

    First, the on ex post facto takings issue. Now this statement here is what makes me think you work in the USPTO. It evidences a lack of understanding of the Constitution to the same level of the new rules. Firstly, ex post facto was found to apply only to criminal matters. This was from Chief Justice Rhienquists decision in the mid 1908s. I have historical evidence that this is, in fact, not the case. The ex post facto clause was ALWAYS intended to apply to ANY government action. However, since, Rheinquist was heavily medicated during the time he authored this opinion, I believe the opinion should be given no weight. Nonetheless, it is another example of statist elitism espoused by the Rheinquist court and we must suffer under the same for the time being.

    The takings issue is one of depriving one of the benefit of their property by legislative actions. This results from the retroactivity of the change in laws. Therefore, the government can do this . . . they just have to pay for it. This happens all the time and there is no reason why the USPTO should be immune from the same. It is actually great, because now instead of suing a patent attorney for making a wrong determination in pursuing the wrong set of claims, the client can sue the government for a taking. Alternatively, should a client sue me for this, I will file an indemnification action against the U.S. government based upon the takings issue. This is really great stuff. The USPTO has, in effect, become an insurance company.

    Anon said:
    You are joking if you suggest that the constitution forbids the PTO from raising its fees.

    Response:
    Duh, it does unless granted the authority by Congress.

    Anon said:
    at a minimum the new rules reduce the burden on the PTO. Reducing regulatory burden is a perfectly good and sufficient reason.

    Response:
    Really, why is that?. In fact, the USSC has stated numerous times that savings of money never justifies abrogating Constitutional duties. This is an interesting intersection of competing interests. Is it possible for a governmental agency to abrogate its Consitutional duties in furtherance of reducing its burden in order to save money. Maybe our Marines should use that reasoning in Fallujah. I can see it now, . . . Mr. President, the budgetary constraints that we are presently under makes it more cost effective to surrender than to fight. As a result the 2nd MarDiv was handed over to the enemy at 0800 hours this morning.

    Anon said:
    Otherwise, the PTO should do *unlimited* work to make sure it never issues an incorrect rejection.

    Response:
    No, the PTO should be held monetarily liable for damages caused to a defendant for an invalid patent. Again this is simply accountability-something which this government is short on.

    Anon said:
    I am not saying that the ex-post nature of the change is completely fair or desirable; nor am I saying that the limits are necessarily a good idea; nor am I saying that the PTO isn’t money grubbing while doing no work. But please, please leave the constitution out of this.

    Response:
    Why, there are literally volumes of law review articles on the unconstitutionality of executive agencies. It is time we trifurcate the same and this act by Dudas is the most glaring example in over 228 years of the Republic as to why the Separation of Powers is a good thing. Besides, if we control this executive agency . . . just think what can be done with the IRS :)

  44. 77

    Unlike most of the comments in this thread, at least reading the new rules doesn’t bring back unpleasant memories of teenagers whining about, god-forbid, having to put some effort into learning something new.

  45. 76

    Steven Sereboff, you are a complete imbecile. If you admire leadership by deceit so much, I hope you are writing from Iraq.
    Malcolm Mooney and Gideon, I read between the lines that you were never employed by an innovative start-up company.

  46. 75

    I just send the following questions for tomorrow’s webcast:

    1) If I have an application that’s presently pending (with no continuations files as of yet) and I file three continuation applications prior to the effective date of Nov. 1, 2007, will any of those continuation applications be themselves entitled to further continuation applications?

    2) If I have an application that’s presently pending (and was filed well before the rules were published) that claims priority from multiple parent applications, and one of those applications has had an RCE filed during its prosecution (perhaps a year or two ago), is the pending application entitled to an RCE once these rules come into effect?

    By any chance, does anyone here know the answers?

  47. 73

    Thanks for the Whapeton reference. I was just curious as to what the CAFC thought would not constitute “incorporation by reference” in a claim referencing the prior claim. Ranbaxy provided an interesting answer.

  48. 72

    why bother about Ranbaxy – all that clarifies is that your incorrectly dependent claim is invalid for form. However, its been settled that such a claim is non-infringable (and therefore useless) for years (Whapeton canvas).

  49. 70

    Dear anon,

    Why would I do that? Do you think I like what the PTO has done? When pigs fly!

  50. 69

    “Pfizer Inc. v. Ranbaxy Labs. Ltd., 437 F.3d 1284 (Fed. Cir. 2006)” is cited to by the USPTO (at 46724) as justification for its changes to the rules for dependent claims …

    Does it bother anyone else that this cite does not check? (It leads to a vacated criminal appeal in which the holding was, “Holding: The Court of Appeals, Stephen F. Williams, Senior Circuit Judge, held that payments received by defendant, a police officer, for information retrieved by defendant’s use of computer data base linked to state data bases concerning fictitious individuals were not “for or because of an official act,” as required to sustain conviction. Reversed.”)

    Does anyone know of the correct F.3d cite? I found the case on Georgetown University’s site (link to ll.georgetown.edu) but there’s no cite listed, just the docket number.

  51. 68

    We (and many other firms in the know) filed a bunch of continuations on Monday after someone got hold of the rules and read the “before August 21, 2007” paragraph. That was an underhand tatic by the PTO.

    Note to JAOI – don’t get all panicky and accuse me of being “un-American” for condeming the USPTO

  52. 67

    “righteous … righteous” (sorry, just watched Finding Nemo again)

    The practitioners who strive to claim “what the art does not teach” are probably making a big mistake, regardless of these rule changes – because they do so in reliance on their own inadequate prior art search, and on the PTO’s inadequate prior art search.

    That’s why their broad allowed claims look so great to their clients, and are so easy for their clients’ competitors to have invalidated.

  53. 66

    Oh yeah –

    But these rule changes are sure going to make it tougher on the “claim what the art does not teach” crowd.

    Now you won’t have 5 RCE’s to keep refining what “the art does not teach”.

    Oh well.-

    I suppose now you’ll just have to focus on the actual invention.

    My my how tough things have gotten!

  54. 65

    Rules are fine.

    This puts the emphasis where it should have been already – on filing applications that claim the correct invention scope in a form you are ready to defend.

    The divisional rules are fine.

    I’m a little surprised that so many practitioners have an issue with this.

    Personally I dislike the serial RCE practice – much better to get claims you can live with and appeal.

  55. 64

    OK, I understand that the retroactive change in rules is somewhat unfair, and I sympathize to some small extent, but can we stop invoking the Constitution in all of this? Anyone who thinks they have a winning constitutional challenge, at least one that will win in a U.S. federal court, is delusional.

    First, the on ex post facto takings issue. Sure, patent applicants disclosed thinking they were going to get unlimited continuations, now they are not. Surely they would have preferred unlimited continuations, and surely at least a couple of patent applicants would not have applied without unlimited continuations and instead hid their inventions as a trade secret. But that logic applies to *any* change in PTO regulations that applies to currently pending applications. If the PTO raised the fee for continuations, surely patent applicants would prefer the lower fee, and surely at least a couple of patent applicants would not have applied if the fee had been higher. You are joking if you suggest that the constitution forbids the PTO from raising its fees.

    Second, some people apparently think that limiting the number of continuations, or limiting the number of claims, violates the “promote the progress” clause. These people apparently have never heard of “rational basis review” that applies to this clause. See Eldred v. Ashcroft. If the court can imagine a rationale, real or hypothetical, that is good in some way, it is constitutional. I’m not even going to wade into the debate about whether too many continuations can hinder progress (which it clearly might, or at least Congress and the PTO could think so without being nuts); at a minimum the new rules reduce the burden on the PTO. Reducing regulatory burden is a perfectly good and sufficient reason. Otherwise, the PTO should do *unlimited* work to make sure it never issues an incorrect rejection. Again, you are joking if you suggest this.

    I am not saying that the ex-post nature of the change is completely fair or desirable; nor am I saying that the limits are necessarily a good idea; nor am I saying that the PTO isn’t money grubbing while doing no work. But please, please leave the constitution out of this.

  56. 63

    Another practice tip– This is rarely used in my experience, but priority can be dropped from applications. This might become commonplace now. If you have a CIP and you don’t need the priority date, you can amend the first paragraph to drop the priority claim(s). The USPTO will remove the priority claims in the “continuity data” in PAIR (I have done this before in order to increase an application’s patent term and they made the change fairly quickly). I am assuming then the application would not already be considered a continuation and you would have the maximum number of continuations.

    Anyone see a problem with this approach?

  57. 62

    How can this rule change be Constitutional. If this sort of action took place in the consumer world, the state attorney general would have to step in to prosecute for consumer fraud.

    That is because it is a classic example of a “bait and switch scam” where an unsuspecting consumer is lured in to make a purchase with a false promise , only to discover that the merchant has no intention of honoring the initial promise whatsoever. In the case of Continuations, patent applicants are lured in to make full and complete disclosures of their inventions, on the promise that the United States government via the USPTO will guarantee them the opportunity to seek protection for any and all that they disclose. The logic behind that promise was based on the Constitution’s “promote the useful arts” goal, as it is in the interest of society to have inventors disclose all up front rather than sequester their inventions until after they obtain protection.

    By making the rule change retroactive, the PTO has implemented a bait and switch scam on applicants who already disclosed their inventions and cannot “undisclose” them. Surely those applicants would not have made full disclosures had they known.

    The rule change cannot justly be retroactive!

    There is another problem. Hence forth applicants will have to decide what to conceal from the applications they file, taking into account the issue of how much they are equipped financially or otherwise to pursue in prosecution. “Intentionally conceal”? How can a rule that forces inventors to “intentionally conceal” be promoting the useful arts? Therefore it is anti-Constitutional or plain un-Constitutional.

    There is still another problem. If applicants are forced to intentionally withhold parts of their invention, how does one determine abandonment? There is now “coerced abandonment” courtesy of the PTO itself. In view of this, again, how can this be anything but anti-Constitutional or un-Constitutional?

    But of all these problems, the “bait and switch” aspect of retroactivity has to be the most troubling. The USPTO is apparently stooped to scamming (literally) the tax paying law abiding public, thanks to this rule change.

  58. 61

    JK, I don’t think so. I think your options are to now either file as many cons as you want before the rules take effect, or after they take effect you can have only one more.

    This is what pisses me off about the rules. This rule change was completely unforeseeable when apps were filed years ago. Some CIPs I’ve filed didn’t really have to be CIPs had I only known.

  59. 60

    i’m not sure i’m reading this right, but it looks like if you already have a pretty long spidery con chain, that you can get ‘one more’ on each of the legs, no matter how far back it goes. But has anyone figured out the RCE restriction? if i’ve already got one, it looks like i’m done doing that again. Looks like the board or petitions people are gonna be busy.

    How fast can i get the examiner to give me an FAOM on my cases?? Glad the end of the year is here – maybe get a few more moved before i’m locked out on some of my current cases.

  60. 59

    Hey TM:
    The only one who is critiquing is you. I merely stated facts. I didn’t even draw a judgment. I note that you judge the situation as being evil.

  61. 58

    johng-
    seems to me like a restriction by original presentation will still work to get a div, but i don’t think a mid-stream restriction will if the examiner has already ‘examined’ the claims. Hopefully the examiners will know to stop that practice! (hah)

  62. 57

    snowman, does “a divisional is now defined as a filing responsive to a restriction requirement – and only if the claims have never been examined before (1.78(d)(1)(ii)(A)-(B))” mean no more restrictions allowed in mid prosecution?

    Also, suppose you reserve one claim space (one of the allowed 25) for a claim to be introduced during prosecution. Could the examiner restrict like before: “not elected by original presentation?” Seems like a divisional could be filed off this restriction.

  63. 56

    In the SUMMARY PART, Under “Supplementary Information”….

    “Under these revisions, an applicant may file two continuation applications (or continuation-in-part applications), plus a request for continued examination in the APPLICATION FAMILY, without any justification. An application FAMILY includes the initial application and its continuation or continuation-in-part applications….”

    The way I look at this is, if I have a application that has three CIPs already, I still can file another two CIPs.
    Am I right on this???

  64. 55

    a general thought on the con process after reading this thing:

    Don’t file voluntary divisionals effective today – they are nothing more than continuations (1.78(a)(2) and (3)) (effective date of 1.78(d)(1) looks like the publication date of the final rule – not November 1. See page 46736-46737). A divisional is now defined as a filing responsive to a restriction requirement – and only if the claims have never been examined before (1.78(d)(1)(ii)(A)-(B)). So if you are already in a con chain, the voluntary divisional is your one and only ‘one more’. Which sort of means that if you file one too many, it loses its priority to the earlier application and is just another application with the filing date as the date you filed the app – just waiting for that publication of the prior app that you thought you were claiming priority to to nail you. So instead maybe file a suggested restriction requirement (1.142(c)) and hope the examiner agrees with you so you can file the div’s. If the examiner doesn’t restrict, then you are stuck figuring out that ESD thing in 1.265 or get within 5/25.

  65. 54

    > If you notice on page 46740 they amended section 1.142 to state that an examiner “may” (rather tha “will”) require restriction if two or more independent and distinct inventions are claimed in a single application.

    That is not a change. It has and will continue to read “may”.

  66. 53

    All this stuff is nuts. I know we have to eventually learn it, but all these rules are insane. Listen to what we are arguing about!

    I read in the Washington Post yesterday that George Bush feels like a dissident because of his failed attempts in spreading democracy around the world. In fact, it turns out that this guy who would wipe tyranny off the face of the globe is the biggest tyrant among us. He’s putting all these barriers up, making things more complicated, stealing taxpayers blind and licking the fat behinds of the big players at our expense.

    Except for a dedicated few out there (you know who you are), I am ashamed of everyone in this business, most notably, the professional IP organizations. How could you let the idiots running the PTO do these things?

  67. 52

    Johng – I think you’re right about restriction requirements being a thing of the past. FR46740 states that an “application containing claims to two or more independent and distinct inventions typically is not restricted to a single invention if the search and examination of all of the claims in the application can be made without serious burden [citations omitted].”

    I think it’s a given that Examiners have, in the past, found “serious burden” if the lights are on when they look at the claims and discern two inventions. Presumably, with the 5/25 rule and the limitations on CONs/RCEs, such “burden” would vanish, ironically leaving it up to the Applicant to convince the Examiner that burden does, indeed, exist, so as to squeeze out a few more divisional applications.

  68. 51

    Interesting article on the effect of a recent anti-patent ruling in India – Novartis has decided to move hundred of millions of dollars in R&D from India to China in light of the court ruling. link to ft.com

  69. 50

    Dear KCB,

    As I suggested earlier in a context where you were groin thinking, in the big picture, you miss the boat.

    Stuff happens, even evil stuff, even in America. Are you contributing anything in any particular field, or is your job just another F’in critic.

  70. 49

    I think you can file as many continuations as you want between now and Nov. 1st. At the same time, the rules give you a freebie after Nov. 1 if you are only claiming priority to apps/patents filed before Aug. 21st (today) and there are no other apps filed between today and Nov. 1 which claim priority to one of those pre 8/21 apps/patents. I think this is intended to lessen the number of continuations filed between now and Nov. 1st. It’s an interesting approach, since you have to decide if you want to file one or more continuations now or keep one in your back pocket for use at any time in the future.

  71. 48

    ALS:

    The PTO’s PowerPoint presentation makes things a little less clear. Take a look at slides 30 and 32(link to uspto.gov). What do you make of this “one more” rule? I initially thought that the continuation rules were only applicable after November 1 so that you could file as many continuations as you want before the November 1 date.

    However, I’m not sure I fully understand this “one more” rule. It appears to limit the number of continuations you could file in cases filed before today to “one more” continuation beyond two. If this is the case, it would make a mass filing of continuations only allowable for cases filed after today if the mass filing were done before November 1. Any other thoughts?

  72. 47

    Dear Malcolm,

    For anecdotal after 5pm interest, excerpts from:

    link to wiki.answers.com
    “In Texas, under state law, if the repo man is reposessing your car at your home at night, you can shoot him dead as long as he is on your property when you shoot him (e.g. in your driveway).

    “In Montana, if you have your property in the hills posted no trespassing and you shoot a trespasser dead for being on your property without even checking to see if he is a lost teenager (he was shot from the front porch and was too far away to know who he was), the grand jury will not indict you for murder. To be fair, the person turned out to have a criminal record.”

  73. 46

    “I believe in some states you can shoot a trespasser if he doesn’t stop when you give him fair warning.”

    Even if the trespasser has good reason to believe that he isn’t trespassing? Or if the only escape from the property is to jump off a cliff to certain death?

  74. 45

    Dear NP,

    My particular Constitutional interest has to do the Supremes’ Constitutionally-inconsistent eBay ruling – – I’ll leave others to talk about continuations et al.

    My position may be found on this June 11, 2007 Patently-O thread, titled, “MercExchange v. eBay: Injunction Hearing.” My thoughts begin near the top with “Dear Brian.” Here is a link:

    link to patentlyo.com

    Also, may I refer you to this thread’s comment?

    link to patentlyo.com
    Dear Lionel,

    With what other areas of civil litigation would you compare patent enforcement to?

    Trespass? Hell, I believe in some states you can shoot a trespasser if he doesn’t stop when you give him fair warning.

    No treble damages? No Injunction? It costs tens of thousands for a talented professional to prosecute an inventor’s invention into an enforceable patent, and several millions of dollars to effectively enforce a patent.

    <> Are you in favor of a country where only wealthy inventors and big business get to try their hand at inventing?

    <> Are you in favor of compulsory licensing?, equivalent to EMINENT DOMAIN for big business? Is that Constitutional even without an amendment?

    Please also comment on this, what KR and I said above:

    “If there’s no ability to get more than a reasonable royalty or lost profits, and no ability for non-competing inventors to enjoin an infringer, why take a license? Just do what you want and let the court system negotiate a license for you after the fact.”

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  75. 44

    “Ironically, the often dreaded restriction requirement will now be most welcomed by many applicants. Of course that makes one wonder if the PTO will pressure examiners to cut down on the number of restriction requirements.”

    If you notice on page 46740 they amended section 1.142 to state that an examiner “may” (rather tha “will”) require restriction if two or more independent and distinct inventions are claimed in a single application. They go on to say that independent and distinct inventions are typically not restricted to a single invention if the search and examination of all the claims in the application can be made withut serious burden.

    What’s a more serious burden for the examiner? Reading an ESD or restricting and doing their own work. I think restriction requirements are a thing of the past.

  76. 43

    I picked the wrong day to quit smoking! Yeah, that ESD thing is a snaggle tooth sea hag of a rule that bothers me more at this time than the continuation changes. That, along with the IDS rules to come are the real but- busters.

    Man, I am jonesin for a drag!

  77. 42

    Wow…these ESD’s are the devil. Wonder what patent prosecution malpractice rates will do after a few years of this…

    And I can’t believe you have to wait until an application is abandoned before canceling withdrawn claims and filing a divisional…

  78. 41

    Barry – as noted in your last sentence, the new rules place no additional burden on examiners – nada, zilch. In light of that, did you mean to say that “the real trick will be to get stubborn examiners to follow the *existing* rules”?

  79. 40

    The real trick will be to get stubborn examiners to follow the new rules. I suppose a lot of request for recon to the group director and/or petitions to various PTO functionaries may end up being more in order than they used to be. The rules place all the burden to streamline prosecution on applicants, no burden on examiners.

  80. 39

    “So, if anyone can shed some constructive light on how the rule changes can be interpreted as being illegal or unconstitutional, I would be grateful.”

    The constitutional grounds for challenging the rules may be a little shaky, maybe some kind of takings-based argument on applications that have already been filed. The illegality argument depends on the “justification” the Office requires to file that third continuation and basis upon which the agency is making the rule. The PTO commentary puts forth a lot of folderol about public policy, uncertainty, public notice, etc., but I really wonder if this is any of the PTO’s business. In addition, can the PTO really argue that lack of its own resources is a legitimate basis for limiting continuations in this manner? What if the petitioner’s argument is simply “the parent application is in litigation and the defendant is exploiting a potential ambiguity in language to avoid a finding of infringement” or even “I just recognized a potential ambiguity in claim language and I want to address it”? The PTO appears to assume that most people filing continuations are doing something illegitimate, when what they are doing is arguably perfectly legitimate, especially considering that Congress has done nothing affirmative to directly address it. For example, the PTO argues that nothing in the legislative history of the Patent Act of 1952 says that unlimited continuations have to be allowed but, by the same token, I doubt there’s anything in that history that enables the PTO to limit continuations in the manner proposed and for the reasons provided. This is the weakest part of their argument IMO. The 5/25 and related applications stuff will be a nightmare, particularly for large corporate entities that file cases using multiple law firms.

  81. 38

    Ironically, the often dreaded restriction requirement will now be most welcomed by many applicants. Of course that makes one wonder if the PTO will pressure examiners to cut down on the number of restriction requirements.

  82. 37

    Re Barry’s comment just above regarding retroactivity, I guess this means that in the case I just inherited from another attorney that has 12 independent claims, my best course of action is to file one voluntary divisional to split it into two cases, each with 5 independents and somehow figure out which 2 independents (and corresponding dependents) to cancel. Talk about a Hobson’s choice!

  83. 34

    JohnG,

    Go here for the voluminous negative comments received concerning these rules when proposed:

    link to uspto.gov

    A number of the comments indicate why the PTO isn’t allowed to do what it did. I don’t remember specifically which ones, but try the ABA and AIPLA comments.

  84. 32

    FirstGlance:

    I agree.

    It appears that the continuation rules will not affect applications filed before 11-1-2007 regardless of whether a first office action is received. If this is true, you are likely to see a mad rush to file continuations before the cutoff date.

    The reason why the USPTO is not attempting to apply the rules retroactively for the continuations rules, in the same way as they are applying it to the other rules changes, is probably quite straightforward. After you have already filed and paid the filing fees for your applications, there’s no way they can refuse to examine it based on later issued rules. This would be considered an illegal taking. For example, suppose you cannot profer a reason for filing your third continuation. Can they simply deny examination based on a new rule they issued after you already filed and paid the fees? Of course not.

    On the other hand, the other rules are not all-out changes. For example, the limitations on the number of claims, can be remedies by filing a lengthy report. So even if you filed 100 claims before 11-1-2007, it would not be considered an illegal taking to deny examination, because you can easily remedy that by filing a report.

    So I guess, it’s now time to rush to the patent office with all the continuation you want to file.

  85. 31

    Some of the rules take effect today:

    “With respect to applications that claim the benefit under 35 USC 120, 121, or 365(c) only of nonprovisional applications or international applications filed before August 21, 2007: an application is not required to meet the requirements set forth in 37 CFR 1.78(d)(1) if: (1) The application claims the benefit under 35 USC 120, 121, or 365(c) only of nonprovisional applications filed before August 21, 2007 or applications entering the national stage after compliance with 35 USC 371 before August 21, 2007; and (2) there is no other application filed on or after August 21, 2007 that also claims the benefit under 35 USC 120, 121, or 365(c) of such prior-filed nonprovisional applications or international applications.”

    (from “Supplementary Information)

    see also the response to comment 332, which references “…(with a provision that allows for at least ‘one more’ continuation application or continuation-in-part application of an application filed before the ***publication date*** of this final rule)…”

  86. 30

    I’ve seen repeatedly on the forum accusations that the rule changes on continuations are illegal or unconstitutional. I’m wondering if anyone can provide why this is the case…

    I notice that 35 USC 132 (b) states, “The director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant.” This appears to mean that not all requests for continued examination need to be approved, only that they need to be made available, and the director can prescribe regulations on how this can be done. It seems that a rule change that allows for zero continuations that do not include supporting the request “by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted” would be perfectly allowable under the law, as there are still regulations prescribed for the continued examination of applications for patent at the request of the applicant.

    I also notice that the constitution states that Congress has the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” It seems that this gives the Congress the ability to secure for limited times to authors and inventors the exclusive right to their respective writings and discoveries, which is performed in part through the USPTO issuing patents. I notice that this does not seem to give any rights to inventors, though. In fact, it seems that it would be unconstitutional to issue bad patents, as they can hinder progress. But, it seems that there is no requirement that a patent needs to be granted at all (no matter how well the application is written, or how novel and non-obvious the invention is), even if the patent would somehow promote science and useful arts, as the patents are the means to the end of promoting the progress of science and useful arts, not a requirement of Congress. I recognize that there are laws that give rights to the inventors, and require that patents be granted in certain instances, but I do not understand how the Constitution comes into the arguments.

    So, if anyone can shed some constructive light on how the rule changes can be interpreted as being illegal or unconstitutional, I would be grateful.

  87. 29

    Man, that “Examination Support Document” described in Rule 1.265 is a bitch! A mean and nasty one. I just finished writing an application that has 32 claims total, two independent. Obviously, we must cancel 7 of these claims or combine them in some way to bring the total to 25.

  88. 28

    Dear KCB,

    In the big picture, I think you and America’s Hero are on the same track:

    Two species of the same genus, both species beginning with “F.”

  89. 27

    What if I have a recently filed case with more than 5 independent and/or more than 25 total claims. Can I file a voluntary divisional of that case today to split up my claims or would that count as one of my continuations?

    It seems to me that it would burn one of my continuations only if I filed such a voluntary divisional after November 1. See the comments at the bottom right of p. 46720. But see also Rule 1.78(d)(1)(B) – continuation can claim benefit only of an application that has had its benefit claimed in only one other application – seems to make all of this retroactive

    I’d appreciate anyone else’s thoughts on this. We have lots of cases that fall into this scenario

  90. 26

    jimmiejohn – FirstGlance is correct. Only certain of the new rules will apply to applications in which a first office action on the merits is not mailed before Nov. 1, 2007. As for the proposed IDS rules, those are currently before the OMB for review. They will likely go into effect in early 2008 (I think).

  91. 25

    America’s Hero, aparrently your love life is lacking. Personally, I have a few more relevant dates worthy of memorialization:)

  92. 24

    FirstGlance,

    The section you quote means that, if you filed an application last week (before publication of the rules), the new rules will apply to application unless you receive an Office Action before Nov. 1, 2007.

    Don’t you think the PTO is going to sit on a lot of Office Actions and mail them en masse on Nov. 1?!!

  93. 23

    Correct me if I am wrong, but it looks like those of us who are trying to get continuations filed before the rule comes into effect may still do so. The retroactive portion of the rule apparently only applies to divisionals without a restriction requirement and applications with more than 5 independent or 25 dependent claims in cases where a first office action has not been received by November 1. Here is the relevant language:

    The changes to 37 CFR 1.75,
    1.142(c), and 1.265 are also applicable
    to any nonprovisional application filed
    before November 1, 2007, in which a
    first Office action on the merits was not
    mailed before November 1, 2007.

    Rules 75 and 142 relate to claims and restriction requirements respectively. Rule 265 is the new rule regarding the requirements for examination support documents. I’m reading this to exclude the rules applicable to continuations and CIPs.

    Anyone else agree?

  94. 22

    I have yet to come across changes to the IDS rules, (i.e., limiting the number of references to 20, or so) Is this change in there, or is it going to be implimented in a different manner?

  95. 21

    “You can make a cool sailboat out of an empty plastic milk container. You’ll need scissors, glue and a stick for the mast.”

    Malcolm’s conception of the inventive process, I presume. Unfortunately, it lacks an enabling disclosure… ;-)

  96. 20

    “Anybody have a useful comment?”

    You can make a cool sailboat out of an empty plastic milk container. You’ll need scissors, glue and a stick for the mast.

  97. 19

    Practitioner – From an article by Stuart Weinberg:

    “Some critics also argued the PTO doesn’t have the right to change the law, claiming this right resides with U.S. Congress. Peterlin poured cold water on this argument, saying the PTO consulted with members of Congress and with the Office of Management and Budget before proposing the changes. “It’s not as if the PTO would just rush out with something that we weren’t allowed to,” she said. “That being said, do I expect people to challenge us? Absolutely.”

    I think what the PTO is forgetting, however, is that consultations with a few members of Congress and the OMB do not constitute binding law.

  98. 18

    “Anyone have a useful comment?”

    Ok, how about waiting until the rules are actually published before rushing to beat them?

  99. 17

    Don’t forget June 1995 when inventors and patent prosecutors jumped from skyscapers to their deaths, unable to accept the loss of patent rights 17 years from issuance. I even remember seeing one couple in Silicon Valley holding hands as they leapt from the roof of their garage where they used to invent stuff together, like, every other day.

    Tragic.

  100. 16

    Why does the patent office think it has the right to limit 35 USC 120 authorized applications by amending 37 CFR?

  101. 15

    Thanks for your typical insight and wisdom Malcolm. Especially your deep understanding of the inventing process and nature of continuing to protect a growing seed of invention in a way that enables a company to compete in the marketplace.

    Dimwit.

    Anyone have a useful comment?

  102. 13

    “It is telling when the defense of the rules (120 pages) is longer than the actual rules (8 pages).”

    It takes a lot of pages to spin practitioners’ legitimate concerns into straw men that they can knock down.

  103. 12

    “all of us who have been rushing to file continuations”

    Maybe it’s time to get back to the bench and do some inventing.

  104. 10

    So does this mean that all of us who have been rushing to file continuations the last few months now have to provide these statements against interest (SAI’s) for each of those unexamined cases (beyond the permitted 2+1 for the parent)? What about if we abandon those cases which have been unexamined – does that mean no RCE is available for the parent without a SAI?

    Help.

  105. 9

    Anon,

    Exactly.
    I was waiting for someone else to notice it first.

    Why are the 5/25 numbers something other than arbitrary and capricious rule making with no rational basis in facts? Why are the 2+1 numbers something other than arbitrary and capricious?

    Where is the PTO’s definition of “invention”. They sure use that word a heck of a lot in their new rules of span-english inquisition. But there is no definition. Their rules are indefinite and subject to whimsical abuse at the hands of every power hungry examiner.

    P.S. Has OMB approved (err… rubber stamped) the PTO’s financial impact statement?

  106. 8

    I wonder if Judge Moore will recuse herself when the cases challenging this arbitrary crap finally reach the Fed. Cir.?

    For someone that never prosecuted anything – her wacked “continuations bad” law review article sure has made a mess of things.

  107. 7

    I’m going to extend my contrarian neck here and say that there are some good things in the package. It reflects a lot of hard work and impressive thinking. There’s a pretty good effort to skirt the APA issues, and my hat’s off to PTO management for their focus and bravado.

  108. 6

    The PTO bellyaches about the the amount of its work, and assures us that it can’t hire its way out of the backlog problem. How do they solve the problem? Pass rules that artificially (arbitrarily and capriciously?) constrict the front end of the patenting process. The new rules appear to hinder, not “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” 25 claims? Why not 5? Why not 400? Why does the PTO get to set this number? 3 CON/CIPs and 2 RCE’s? Why any? Why not 10? Why any set limit at all? It’s almost the definition of arbitary. I’m sure they’ll trot out some “scholarly” article on how these artificial limits don’t effect a high percentage of applicants thus ignoring the fact they are still arbitrary and harmful to legitimate invention. It will be interesting to see if any corporation, entity or individual has the time and means to file suit against these rules.

  109. 5

    Somebody please file suit ASAP! I wish I could, but what do prosecutors know about litigation?

  110. 4

    These things are really a frigging abomination.

    A pox on the house of Dudas, Doll and Peterlin.

  111. 3

    The strategy of filing a lot of claims and then canceling them in a prelim amdt would be useful if you wanted to later bring them back in the case for whatever reason rather than rely on just what is in the spec. the prelim amdt would say that the claims are being canceled without prejudice to being brought in again.

  112. 2

    “a) file an application with more than 25 claims;
    b) in a preliminary amendment filed the same date as the filing date of the application, cancel some of the “extra claims.”

    What the.

    On the record? Why not just prose-ify(TM) them and stick them in the disclosure?

    Are these clients of yours alchemists?

  113. 1

    this week I am too busy with client deadlines to read this monster, but I have PRACTICAL QUESTION for those who get to read this document:

    A question about the 25 claim limit:
    often I provide dependent claims to clearly provide examples of what I meant in the independent claim. these dependent claims are not necessarily fallback positions, but are rather meant to imbue clarity into the independent claim.
    can I:
    a) file an application with more than 25 claims;
    b) in a preliminary amendment filed the same date as the filing date of the application, cancel some of the “extra claims.”
    WIHOUT triggering the requirement for the “examination document.”
    Even today, often we do this if the client wants a claim “on the record” but does not want to pay for the extra claim.
    according to the new rules, would this “irreversably trigger” the requiremenet for the examination document, or would I be OK as long as I cancel the extra claims? does the 25 claim refer to the application as filed, or the application as being examined ??????

    Thanks.

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